Oracle International Corporation v. Rosaria Robel
Claim Number: FA2305002043767
Complainant is Oracle International Corporation (“Complainant”), California, USA, represented by Jeanette Eriksson of FairWinds Partners LLC, District of Columbia, USA. Respondent is Rosaria Robel (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oracle-netsuit.com>, registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on May 9, 2023; Forum received payment on May 9, 2023.
On May 9, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <oracle-netsuit.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oracle-netsuit.com. Also on May 10, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Oracle International Corporation, provides computing and database products and services. Complainant has rights in the ORACLE and NETSUITE marks through its registration with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,239, registered on July 6, 1982) (for ORACLE)) and European Intellectual Property Office (“EUIPO”) (e.g., Reg. No. 003137627, registered on May 26, 2004 (for NETSUITE)) through its fully owned subsidiary Netsuite Inc. The disputed domain name is confusingly similar to Complainant’s ORACLE and NETSUITE marks as the domain name incorporates both marks while adding a hyphen, eliminating the letter “e” from the word “NETSUITE” and adding the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its ORACLE and NETSUITE marks in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead diverts users while passing off as Complainant and creating a false sense of affiliation with Complainant and offering competing services and engaging in phishing.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business and attracts users for commercial gain while creating a likelihood of confusion. Additionally, Respondent fails to respond to Complainant’s cease-and-desist letter and changes the content on the resolving webpage. Furthermore, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ORACLE and NETSUITE marks.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on April 13, 2023.
2. Complainant has established rights in the ORACLE and NETSUITE marks through its registration with multiple trademark organizations including the USPTO (e.g., Reg. No. 1,200,239, registered on July 6, 1982) (for ORACLE)) and the EUIPO (e.g., Reg. No. 003137627, registered on May 26, 2004 (for NETSUITE)) through its fully owned subsidiary Netsuite Inc.
3. The disputed domain name’s previously resolving webpage displayed the ORACLE and NETSUITE logos together with a contact form for a free demo of NETSUITE. When a visitor began to fill out the form, an unknown file download was initiated automatically in the visitor’s browser.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the ORACLE and NETSUITE marks through its registration with multiple trademark organizations including the USPTO (e.g., Reg. No. 1,200,239, registered on July 6, 1982) (for ORACLE)) and the EUIPO (e.g., Reg. No. 003137627, registered on May 26, 2004 (for NETSUITE)) through its fully owned subsidiary Netsuite Inc.. Registration of a mark with multiple trademark organizations is sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). Since Complainant has provided evidence of trademark registrations for the marks ORACLE and NETS, the Panel finds Complainant has established rights in the ORACLE and NETSUITE marks under Policy ¶ 4(a)(i).
Complainant argues the disputed domain name <oracle-netsuit.com> is confusingly similar to Complainant’s ORACLE and NETSUITE marks. Under Policy ¶ 4(a)(i), combining marks while eliminating a letter, adding a hyphen, and adding the “.com” gTLD is insufficient in differentiating from the mark. See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). The disputed domain name includes Complainant’s ORACLE and NETSUITE marks as the domain name incorporates both marks while adding a hyphen, eliminating the letter “e” from the word “NETSUITE,” and adding the “.com” gTLD. The Panel finds the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent is not commonly known by the disputed domain name nor has Complainant authorized or licensed Respondent to use its marks in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information identifies Respondent as “Rosaria Robel.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), diverting users and passing off as a complainant while creating a false sense of affiliation with complainant and offering competing services while phishing is not a bona fide offering of goods or services, nor any noncommercial or fair use. See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also Pfizer Inc. v. Internet Gambiano Prods LLC., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was “clearly well-known” at the time of the respondent’s registration of the domain name the panel could infer that the respondent acted for the purpose of “capitalizing on the confusion created by the domain name’s similarity to the [m]ark”); see also Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant notes the disputed domain name previously resolved to a site displaying Complainant’s marks with a contact form for a free demo. Additionally, Complainant asserts the disputed domain name previously distributed malware while engaging in phishing. Therefore, the Panel finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant’s business and attracting users for commercial gain while creating a likelihood of confusion. Under Policy ¶ 4(b)(iii), passing off as a complainant is a disruption of the complainant’s business and thus evidence of bad faith. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Additionally, under Policy ¶ 4(b)(iv), attracting users for commercial gain while creating a likelihood of confusion is evidence of bad faith registration and use. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). The Panel recalls that the screenshots of the disputed domain name’s previously resolving webpage displayed the ORACLE and NETSUITE logos together with a contact form for a free demo of NETSUITE. When a visitor began to fill out the form, an unknown file download was initiated automatically in the visitor’s browser. The Panel finds that this use and impersonation diverted visitors - likely Complainant’s customers and potential customers - to Respondent’s commercial website which is not, in any way, associated with, licensed, or approved by Complainant. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant further contends Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the ORACLE and NETSUITE marks. The Panel notes that as a result of the long usage and promotion of the ORACLE and NETSUITE marks, Complainant’s marks had become famous and widely recognized around the world by both computing industry professionals and members of the general public prior to the registration of the disputed domain name. The Panel infers, due to the notoriety of Complainant’s marks and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the ORACLE and NETSUITE marks at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oracle-netsuit.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: June 5, 2023
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